The issue of copycat brands has been around almost since people started trading and marking goods.
One of the earliest cases was reported in 1617, and in it one of the judges referred to a case involving a "a clothier, [who] had gained great reputation for his making of his cloth [and] he used to set his mark to his cloth, whereby it should be known to be his cloth and another clothier perceiving it, used the same mark to his ill-made cloth on purpose to deceive him, and it was resolved that the action did well lie."
The world of branding has moved on, but at the heart of a passing off case is deceit. That gives us the famous legal test from Perry v Truefitt: "A man is not to sell his own goods under the pretence that they are the goods of another man".
The appeal for the copycat or lookalike is the same now as it was in the 17th century. Someone has built up a reputation for the quality of his goods, why not take advantage of that by making a product that looks similar?
A "copycat" brand is a brand which is intentionally similar to another. The similarity may be found in the product's shape, packaging or colour. We are not talking about counterfeit or "fake" products. A copycat brand attempts to get as close as it can to a well-known brand without infringing the original brand owner's intellectual property rights.
There are many famous examples:
- Morning Star v Express Newspapers – where a communist broadsheet complained that the proposed "Daily Star", which was said to be a "popular, lively, exciting" newspaper with nearly nude models, was guilty of passing off. This case is more famous for the judge's comment that "only a moron in a hurry would be misled".
- Reckitt & Colman Products Ltd. v Borden Inc. (1990) – this was the "Jif Lemon" case, where the House of Lords set out the test for passing off.
- United Biscuits v Asda (1997) - a battle between Asda's "Puffin" chocolate biscuits and United Biscuits' "Penguin" biscuits. The issue was that the packaging was similar enough to mislead consumers. This was the first reference to the concept of "taking a conscious decision to live dangerously".
- Irvine v Talksport Ltd (2003) – where an apparent endorsement was akin to passing off.
- Specsavers v Asda (2010) where the living dangerously concept was considered in some detail.
This year we have seen a snow-filled gin bottle, a lemon-covered can of cider and a chocolate-coated biscuit – several court cases have considered "copycat" own brands and products produced by well-known discount supermarket chains.
Although many cases involve passing off, many more involve trade mark infringement. A registered trade mark has the advantage that the holder of the registration does not need to prove a reputation. The starting point is the registered trade mark.
What is trade mark infringement and passing off?
Most cases involving "copycat" brands centre around two specific areas:
(1) Confusion: where a similar or identical sign is used in relation to similar or identical goods or services which will likely confuse the public; and
(2) Unfair advantage/detriment: where a similar or identical sign takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trade mark.
Similarity and Likelihood of Confusion
The public will likely be confused if they believe that the product made by the "copycat" brand has been made by the trade mark holder. That sounds straightforward enough, but how does the trade mark holder prove that?
One piece of evidence is the distinctiveness of the trade mark. Is it unique or unusual, like, for example, KODAK or Zappos, or arbitrary as in "Apple" for computers. At the other end of the scale are descriptive marks, which describe the product. The more distinctive the mark, with a similar copycat, the more likely it is that a consumer will be confused. If the mark or get-up is generic, it will be more difficult to establish confusion.
In Thatchers Cider Company Limited v Aldi Stores Limited, decided this year, the High Court concluded that Aldi's "TAURUS CLOUDY CIDER LEMON" did not infringe Thatchers Cider Company Limited's trade mark nor did it amount to passing off. Thatchers' product consisted of an illustration of lemons and included the words "THATCHERS CLOUDY LEMON CIDER" on a yellow background. The court found that there was a low degree of similarity between Aldi's product and Thatchers' product. The court decided that "THATCHERS" was aurally and conceptually different to "TAURUS".
The court also determined that there was no likelihood of confusion on the part of the average consumer. The court stated that it was insufficient that the "copycat" sign may bring to mind the trade mark. Furthermore, the use of the colour yellow, lemons and green leaves was common in cider products and lemon-flavoured drinks.
Unfair Advantage or Detriment
The court may assess whether a "copycat" brand has taken unfair advantage of the distinctive character or reputation of a trade mark to benefit from and exploit its value. The "copycat" brand need not intend to take advantage of the trade mark's reputation.
Detriment can be a weakening of the trade mark's ability to signify the goods or services for which it is used because of the "copycat" brand. Detriment will be found if the economic behaviour of the average consumer of the goods or service has changed or is seriously likely to change.
These concepts are different but often come together. They are typically asserted where it is difficult to establish confusion. For example, in Red Bull GmbH v Big Horn UK Ltd and others (2020) the claimant made a well-known energy drink, "Red Bull", and its branding was two silhouetted bulls charging at each other in front of a circle. The defendant made energy drinks with the name "Big Horn" and the branding had two charging rams in front of a circle. The court found that while there was no confusion, the defendants were taking advantage of the Red Bull branding,
This year, in William Grant & Sons Irish Brands Limited v Lidl, the court considered if the re-design of Lidl's Hampstead gin get-up infringed William Grant & Sons trade mark and amounted to passing off in respect of its product, Hendrick's gin. The court decided that it was difficult to view Lidl's re-design of Hampstead gin's get-up as accidental or coincidental. Therefore, William Grant & Sons had a reasonable prospect of successfully demonstrating that Lidl intended to benefit from the reputation and goodwill of their trade mark.
What should you do?
Being a brand market leader inevitably leads competitors to take inspiration from what is most attractive about that brand, which often includes its trade marks.
So, what can businesses do to avoid getting into trade mark trouble? Here are a few suggestions:
- Research your market. A quick check of the trade mark register and Companies House will tell you if someone else has already taken the brand;
- Be inventive. The best trademarks are made-up words which have no meaning in themselves. Then work on building your own reputation and goodwill;
- If you are working from a competitor's trademark you are already "living dangerously". You will have to work hard to persuade the court you have not crossed the line; and
- Register your trademark early. Although a relevant reputation or goodwill can be created very quickly, a registered trademark is much better.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
